Determining Obviousness under 35 USC 103 in view of KSR International Co. v. Teleflex

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Determining Obviousness under 35 USC 103 in
view of KSR International Co. v. Teleflex

• TC3600
• Business Methods
• January 2008

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KSR v. Teleflex Guidelines

• KSR International Co. v. Teleflex Inc., 82 USPQ2d
  1385 (2007)
• USPTOs Examination Guidelines for Determining
  Obviousness Under 35 USC 103 in View of the
  Supreme Court Decision in KSR International Co.
  v. Teleflex Inc. published in the Federal
  Register, Vol. 72, No. 195, pages 57526-57535.
• See also MPEP 2141, Eight Edition, Revision 6
  (September 2007).

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KSR v. Teleflex Guidelines

• In KSR, the Supreme Court
• Reaffirmed the obviousness test established in
  Graham v. Deere
• Stated that the Federal Circuit had erred by
  applying the teaching-suggestion-motivation
  (TSM) test in a rigid and formalistic way

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KSR v. Teleflex 82 USPQ2d 1385

• The basic Factual Inquiries of Graham v. John
  Deere
• Determining the scope and content of the prior
  art
• Ascertaining the difference between the claimed
  invention and the prior art and
• Resolving the level of ordinary skill in the
  pertinent art.

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KSR v. Teleflex 82 USPQ2d 1385

• The question of obviousness must be resolved on
  factual determinations.
• The Examiner fulfills the critical role of
• fact finder.
• The Examiner must ensure that the written record
  includes finding of fact concerning the state of
  the art and the teachings of the references
  applied.

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KSR v. Teleflex 82 USPQ2d 1385

• Once the finding of facts is articulated, the
  examiner must provide an explanation to support
  an obviousness rejection under 35 USC 103.
• This is so regardless of whether the source of
  that knowledge and ability was documentary prior
  art, general knowledge in the art, or common
  sense.

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KSR v. Teleflex 82 USPQ2d 1385

• In many fields it may be that there is little
  discussion of obvious techniques or combinations,
  and it may be the case of market demand, rather
  than literature, will drive design trends.
• Prior art is not limited just to the references
  being applied, but includes the understanding of
  one of ordinary skill in the art. The prior art
  references need not teach or suggest all the
  claim limitations.
• However Examiners must explain why the
  differences between the prior art and the claimed
  invention would have been obvious to one of
  ordinary skill in the art.

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KSR v. Teleflex 82 USPQ2d 1385

• In determining obviousness, neither the
  particular motivation to make the claimed
  invention nor the problem the inventor is trying
  solve controls.
• The proper analysis is whether the claimed
  invention would have been obvious to one of
  ordinary skill in the art after consideration of
  all the facts.
• Factors other than the disclosure of the prior
  art may provide the basis for concluding that it
  would have been obvious.

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Graham v. John Deere Test Tips

• Determining the scope and content of the prior
  art
• The search should cover the claimed subject
  matter and should also cover the disclosed
  features which might reasonably be expected to be
  claimed. (MPEP 904.02)
• Examiners should continue to follow the general
  search guidelines set forth in section 904 t0
  904.03 of the MPEP.
• Prior art can either be in the field of
  applicants endeavor or be reasonably pertinent
  to the particular problem with which the
  applicant was concerned.
• Prior art that is in a field of endeavor other
  than that of the applicant or solves a problem
  which is different from that which the applicant
  was trying to solve should also be considered for
  the purpose of 35 USC 103.

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Graham v. John Deere Test Tips

• Ascertaining the differences between the claimed
  invention and the prior art.
• Ascertaining these differences between the
  claimed invention and the prior art requires
  interpreting the claim language and considering
  both the invention and the prior art as a whole.
  (MPEP 2141.02)

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Graham v. John Deere Test Tips

• Resolving the level of ordinary skill in the art.
• In many cases, a person of ordinary skill in the
  art will be able to fit the teachings of multiple
  disclosures together like a piece of a puzzle.
• In addition, Examiners may rely on their own
  technical expertise to describe the knowledge and
  skills of a person of ordinary skill in the art.

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Graham v. John Deere Test Tips

• If after going through the Graham factual
  analysis, the examiner concludes that the
  teaching-suggestion motivation rationale (TSM) is
  still applicable, then a rejection using TSM can
  still be made.
• TSM is still valid but it is not the only
  rationale to support a conclusion of obviousness
  under 35 USC 103 when employing the Graham
  analysis.
• The examiner must also consider one or more of
  the following rationales set forth below.

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A Combining Prior Art Elements According to
Known Methods

• See pages 2-5 of the Handout.
• The keys to rationale A
• The elements are all known but not combined as
  claimed.
• The technical ability exists to combine the
  elements as claimed and the results of the
  combination are predictable.
• When combined, the elements perform the same
  function as they did separately.

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B Simple Substitution of One Known Element for
Another

• See pages 6-8 of the Handout.
• The keys to rationale B
• The prior art differs from the claim by the
  substitution of some components.
• The substituted components were known.
• The technical ability existed to substitute the
  components as claimed and the result of the
  substitution is predictable.

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C Use of Known Technique to Improve Similar Art
in Same Way

• See pages 9-12 of the Handout.
• The keys to rationale C
• Claimed invention has an improvement over a
  base device (or method, product) taught in a
  reference.
• The prior art also teaches a comparable device
  improved in the same way.
• The technical ability existed to improve the base
  device in the same way and the result of the
  improvement is predictable.

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D Applying Known Technique to Known Art Ready
for Improvement

• See pages 13-17 of the Handout.
• The keys to rationale D
• Similar to rationale C, but broader.
• Claimed invention has an improvement over a
  base device (or method, product) taught in a
  reference.
• The prior art teaches a known technique that is
  applicable to the base device.
• Those in the art would have recognized applying
  the known technique would have yielded an
  improvement and was predictable.

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E Obvious to Try Among a Finite Number of
Identified Solutions

• See pages 18-20 of the Handout.
• The keys to rationale E
• Recognized problem or need in the art including
  market pressure or design need.
• Finite number of identified predictable
  solutions.
• Those in the art could have pursued known
  solutions with reasonable expectation of success.

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F Design Incentives or Market Forces Prompting
Variations

• See pages 21-23 of the Handout.
• The keys to rationale F
• The prior art teaches a base device (or method,
  product) similar or analogous to the claims.
• Design incentives or market forces would have
  prompted change to the base device.
• Known variations or principles would meet the
  difference between the claimed invention and the
  prior art and the implementation would have been
  predictable.

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G Teaching, Suggestion or Motivation to Combine

• See pages 24-27 of the Handout.
• The keys to rationale G
• This is the familiar motivation rejection where
  a teaching, suggestion or motivation to combine
  appears either in the references or in the
  knowledge generally available to one of ordinary
  skill.

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Allowing in a Post-KSR World

• While KSR may provide strong support for
  obviousness rejections, claims will still be
  allowable because
• Insufficient facts, or a persuasive showing by
  applicant countering one or more findings of
  fact.
• Consider
• Have the claims been given their broadest
  reasonable interpretation? Is there a special
  definition?
• Is there confidence in the search? Did you
  search for the missing feature by itself?
• Have the references been properly interpreted and
  considered for common sense conclusions and what
  they would teach to those in the art?

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Allowing in a Post-KSR World

• claims can be allowable because (contd)
• Secondary considerations, e.g. commercial
  success, long felt need, and unexpected results.
• Recall that the KSR rationales rely on
  predictable results or an expectation of
  success. Secondary considerations may be used
  to address this.
• See MPEP 716 through 716.04 for tips on
  evaluating the persuasiveness of secondary
  considerations.
• Further training on 132 affidavit practice coming
  soon.

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Allowing in a Post-KSR World

• claims can be allowable because (contd)
• Claimed elements could not have been combined by
  known methods.
• E.g. due to technological difficulties. This is
  different from would not have been combined
  because of a lack of motivation.
• Arguments concerning teaching away and
  destroying the teachings can apply, but be
  careful.
• See MPEP 2145 Section X. D. References Teach
  Away from the Invention or Render Prior Art
  Unsatisfactory for Intended Purpose, as well as
  MPEP 2141.02 and 2143.01.

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Allowing in a Post-KSR World

• claims can be allowable because (contd)
• Claimed elements could not have been combined by
  known methods.
• Arguments concerning hindsight can still apply,
  but be careful.
• See MPEP 2145 Section X. A. Impermissible
  Hindsight. A hindsight argument would have to
  overcome the findings of fact and conclusions
  expressed in the rationales.
• Arguments concerning expectation of success can
  still apply, but be careful.
• See MPEP 2143.02 Reasonable Expectation of
  Success is Required. Expectation of Success
  can be a factor in unpredictable arts, e.g. some
  chemical areas, but the electrical arts are more
  predictable and this issue would be rare.

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Allowing in a Post-KSR World

• claims can be allowable because (contd)
• Claimed elements do not merely perform the
  function that each element performs separately.
• E.g. a synergistic effect, see MPEP 716.02(a),
  section I.
• This is not an exhaustive list.
• If you see an allowable feature in the spec or a
  dependent claim, offer it to applicant.

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Allowing in a Post-KSR World

• Note Mere statement or argument by the applicant
  that the Office
• 1) has not established a prima facie case of
  obviousness, or
• 2) that the Offices reliance on common knowledge
  is unsupported by documentary evidence,
• will not be considered a substantively adequate
  rebuttal or an effective traversal of the
  rejection.
• See 37 CFR 1.111(b).

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THE END